Session I - NFTs Demystified: Where we are and where we’re going – Rob Potter
As Non-Fungible Tokens (NFTs) become less a passing fad and more a practical tool for business and communication, IP practitioners will need to be (at least) generally familiar with the tech, the background, and the significant potential surrounding NFTs. This presentation will provide an overview of NFTs related to trademark and copyright law. Beginning with a brief history — and clear explanation — of NFTs, we’ll next explore the current types and uses, the potential benefits to businesses and brand owners, and the legal issues and litigations NFTs have already created. We’ll then look towards the future, to imagine a world where NFTs are ubiquitous in the metaverse and in real life and consider the most appropriate legal regimes to govern these novel IP issues.
Key topics to be discussed:
A simple yet adequate layman’s understanding of NFTs and the associated blockchain technology
An overview of the history and development of NFTs (including pre-digital history)
A summary of the existing and potential trademark and copyright issues associated with NFTs
A review of the NFT-related litigation to date
A guide to assessing if and when businesses should consider NFTs
Session II - Design Patents for Patent Professionals - Babak Kusha
This presentation will discuss recent developments in design patent; indispensable enhancements to utility patent, brands, and trademark portfolios; and effective enforcement strategies short of filing a complaint.
Key topics to be discussed:
Overview of U.S. Design Applications
Design Applications – Graphical User Interfaces and Portions Thereof
Design Applications – Key CN Design Patent Rule Changes in 4th Amendment to China Patent Law
Session III - Petitions for Expungement or Reexamination and Other Aspects of the Trademark Modernization Act – Ted Davis
United States trademark professionals and mark owners now have over half a year of experience in the United States Patent and Trademark Office’s administration of the Trademark Modernization Act (TMA), which Congress enacted in part to address the problem of “deadwood” cluttering the USPTO’s trademark registers. During roughly the same period, the USPTO has undertaken various other initiatives bearing on bad-faith trademark-related filings.
Key topics to be discussed:
The TMA’s new ex parte mechanisms for invalidating registrations of marks either not used in commerce or never used in commerce, including:
How to establish the prima facie case of nonuse necessary to initiate either or both of the TMA’s ex parte mechanisms for challenging federal registrations
How federal registrants can rebut prima facie cases of nonuse
The USPTO’s expansion of its administrative sanctions program, which targets improper filing schemes
The Trademark Trial and Appeal Board’s apparently increasing receptiveness to allegations of the fraudulent procurement and maintenance of registrations
The TMA’s restoration of the presumption of irreparable harm in cases in which a violation of the Lanham Act has been shown in litigation
The TMA’s successful protection of the judges of the Trademark Trial and Appeal Board against allegations that they have been unlawfully installed under the Constitution’s Appointments Clause
Date: October 31, 2022
Babak Kusha | Kilpatrick Townsend & Stockton LLP
Babak Kusha is a partner in the firm’s Intellectual Property practice and serves as co-chair of the multidiscipline Retail & Consumer Group. Previously, he has served as a co-chair of the firm’s Mechanical & Medical Device Patent Team. Babak focuses his practice on patent prosecution and counseling, with special emphasis in the electromechanical, mechanical, biomedical, related software technologies, food and beverage, and consumer goods areas. As an accomplished patent attorney and expert in design rights, Babak helps clients evaluate IP risks, implement carefully-calculated IP plans and acquisitions, and strategize the use of IP to achieve business related goals.
Babak has extensive experience in the field of design law, including strategic design protection and enforcement including coordinating U.S. and International utility and design patent, trademark and copyright protections. He counsels clients on various aspects of intellectual property law, including clearance or freedom-to-operate, invalidity and non-infringement issues, competitive analyses, patentability opinions, invention identification and assessment, as well as preparation and prosecution of patent applications.
With 20 years of experience as a Registered Patent Attorney and 12 years as a Mechanical and Nuclear Engineer, Babak advises clients on patent strategy for new products, including assisting inventors with invention disclosures; he works closely with the product management team, technical directors, design staff, technical staff and in-house corporate counsel, IP and patent attorneys.
Rob Potter | Kilpatrick Townsend & Stockton LLP
Rob Potter delivers practical and efficient solutions to complicated issues in trademark/copyright litigation and brand enforcement. He has also become increasingly active in the NFT space, providing counseling on enforcement and emerging best practices, and frequently speaking and writing on the topic. Rob’s priority is listening to his clients and learning their industries to develop strategies specific to their business and legal needs.
Rob has achieved successful results for some of the biggest brands and content owners in the world, in sectors including tech, luxury goods and apparel, and entertainment/hospitality. Rob is adept at all aspects of trademark and copyright counseling, enforcement, and litigation, and has created and maintained anti-counterfeiting enforcement programs for several global brands.
Theodore H. Davis Jr | Kilpatrick Townsend & Stockton LLP
Ted Davis divides his practice between domestic and international litigation and client counselling in the fields of trademark, copyright, false advertising, and unfair competition law and has particular experience in trade dress and gray market disputes, litigation before the Trademark Trial and Appeal Board, and with large-scale trademark clearance and registration projects.
He is a past chair of the American Bar Association Section of Intellectual Property Law, on behalf of which he has testified before Congress on trademark and Internet issues, and he also has served on the Boards of Directors of the American Intellectual Property Law Association and the International Trademark Association. He is a frequent lead author of amicus briefs to the Supreme Court of the United States and other federal courts, as well as an expert witness in federal district court litigation and in prosecution matters before the U.S. Patent and Trademark Office.
Mr. Davis has been recognized as one of Atlanta’s “Legal Elite” ( Georgia Trend Magazine), a Georgia “Super Lawyer” for intellectual property (Super Lawyers magazine), the 2014 and 2022 “Atlanta Lawyer of the Year” in trademark law (The Best Lawyers in America®), an “IP Icon” (IP Law360), and an “IP Star” ( Managing Intellectual Property magazine). World Trademark Review 1000 – The World’s Leading Trademark Professionals regularly lists him as among the top ten United States attorneys in the categories of enforcement, prosecution, and strategy, and Legal Media Group has identified him as among the top 25 practitioners for Trademark Law in the country.
Chambers USA: America’s Leading Lawyers for Business also has listed him for intellectual property since 2013. He is a frequent author on intellectual property topics, and his articles have received the Ladas Memorial Award from the International Trademark Association and the Burton Award for excellence in legal writing. He is AV® rated by Martindale-Hubbell.
Session I – NFTs Demystified: Where we are and where we’re going | 2:00pm – 3:00pm
A simple yet adequate layman’s understanding of NFTs and the associated blockchain technology | 2:00pm – 2:10pm
An overview of the history and development of NFTs (including pre-digital history) | 2:10pm – 2:20pm
A summary of the existing and potential trademark and copyright issues associated with NFTs | 2:20pm – 2:30pm
A review of the NFT-related litigation to date | 2:30pm – 2:45pm
A guide to assessing if and when businesses should consider NFTs | 2:45pm – 3:00pm
Break | 3:00pm – 3:10pm
Session II – Design Patents for Patent Professionals | 3:10pm – 4:10pm
Overview of U.S. Design Applications | 3:10pm – 3:30pm
Design Applications – Graphical User Interfaces and Portions Thereof | 3:30pm – 3:50pm
Design Applications – Key CN Design Patent Rule Changes in 4th Amendment to China Patent Law | 3:50pm – 4:10pm
Break | 4:10pm – 4:20pm
Session III – Petitions for Expungement or Reexamination and Other Aspects of the Trademark Modernization Act | 4:20pm – 5:20pm
The TMA’s new ex parte mechanisms for invalidating registrations of marks either not used in commerce or never used in commerce | 4:20pm – 4:35pm
a. How to establish the prima facie case of nonuse necessary to initiate either or both of the TMA’s ex parte mechanisms for challenging federal registrations
b. How federal registrants can rebut prima facie cases of nonuse
The USPTO’s expansion of its administrative sanctions program, which targets improper filing schemes | 4:35pm – 4:45pm
The Trademark Trial and Appeal Board’s apparently increasing receptiveness to allegations of the fraudulent procurement and maintenance of registrations | 4:45pm – 4:55pm
The TMA’s restoration of the presumption of irreparable harm in cases in which a violation of the Lanham Act has been shown in litigation | 4:55pm – 5:05pm
The TMA’s successful protection of the judges of the Trademark Trial and Appeal Board against allegations that they have been unlawfully installed under the Constitution’s Appointments Clause | 5:05pm – 5:20pm